Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of group I (Claims 1-7 and 16-19) in the reply filed on 06/22/2026 is acknowledged. The traversal is on the ground(s) that “the process of Group II as claimed expressly involves the ATS controller structure of Group I, including the removable fastener, the product of Group I cannot be used in a materially different process without departing from the express limitations of the method claims in Group II.” This is not found persuasive because when searching for the feature of Group I (An automatic transfer switch (ATS) controller), there would be no need to search for the invention of Group II (A method of commissioning an automatic transfer switch (ATS), because the feature mentioned in the previous Office action for Group II, are certainly not required in the search for Group I (different classify, different field, etc.). So, these non-co-extensive searches would place a search burden on the examiner to search and examine all of the inventions.
The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 and 16 are ejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US Patent No. 12199468 B2. Although the claims at issue are not identical, they are not patentably distinct from because the instant claim is broader version of the patented claim, and any infringement over the patents would also infringe over the instant claims.
The table below demonstrates claims 1-2 and 16 from the instant application and claim 1 from US Patent No. 12199468 B2. The limitation recited in the US patent that correspond to the limitation recited in the instant applicant have been bold for Applicant’s convenience.
Claim limitation of the instant App.
Claim limitation of US Patent No. 12199468 B2
1. An automatic transfer switch (ATS) controller comprising: a controller board that is configured to control operation of one or more switching components; and a mobile memory module that is removably mounted to, and configured for data communication with, the controller board, wherein the mobile memory module is further configured to store one or more operational settings for controlling the one or more switching components.
2. The ATS controller of claim 1, wherein a removable fastener releasably secures the mobile memory module to the controller board.
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16. A mobile memory module for an automatic transfer switch (ATS), the mobile memory module comprising: a memory board comprising a nonvolatile memory; wherein the mobile memory module is configured to be removably mounted to a controller board in an ATS controller of the ATS.
1. An automatic transfer switch (ATS) for a power control system, comprising: one or more electrical switching components; an ATS controller connect to the one or more switching components, the ATS controller having a controller board therein that controls operation of the one or more switching components; a mobile memory module removably mounted to the controller board and connected for data communication with the controller board, the mobile memory module configured to store one or more operational settings required for controlling the one or more switching components; and a removable fastener releasably securing the mobile memory module to the controller board.
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1. An automatic transfer switch (ATS) for a power control system, comprising: one or more electrical switching components; an ATS controller connect to the one or more switching components, the ATS controller having a controller board therein that controls operation of the one or more switching components; a mobile memory module removably mounted to the controller board and connected for data communication with the controller board, the mobile memory module configured to store one or more operational settings required for controlling the one or more switching components; and a removable fastener releasably securing the mobile memory module to the controller board.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 7 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Beard et al. (US Pub No. 2023/0126639 A1 and Beard hereinafter)
Regarding Claim 1, Beard discloses (figs. 1-3B) an automatic transfer switch (ATS) controller comprising: a controller board (230) that is configured to control operation of one or more switching components (fig.2); and a mobile memory module (210) that is removably mounted to, and configured for data communication with, the controller board ([0039]), wherein the mobile memory module is further configured to store one or more operational settings for controlling (memory controller) the one or more switching components ([0038-0040]).
Regarding Claim 2, Beard discloses (figs. 1-3B) the ATS controller of claim 1, wherein a removable fastener releasably secures the mobile memory module to the controller board ([0039]).
Regarding Claim 3, Beard discloses (figs. 1-3B) the ATS controller of claim 1, wherein the mobile memory module comprises a nonvolatile memory ([0031]).
Regarding Claim 4, Beard discloses (figs. 1-3B) the ATS controller of claim 3, wherein the nonvolatile memory is preloaded with the one or more operational settings for controlling the one or more switching components ([0039]).
Regarding Claim 5, Beard discloses (figs. 1-3B) the ATS controller of claim 3, wherein the mobile memory module further comprises a protective outer housing (360) enclosing a memory board of the nonvolatile memory ([0039]).
Regarding Claim 7, Beard discloses (figs. 1-3B) the ATS controller of claim 5, wherein the protective housing comprises a hardened material that is impact, shock, and heat resistant (([0039]) and metal).
Claim 16 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Ibrahim et al. (US Pub No. 2014/0246910 A1 and Ibrahim hereinafter)
Regarding Claim 16, Ibrahim discloses (figs. 1-5) a mobile memory module for an automatic transfer switch (ATS), the mobile memory module comprising: a memory board (104) comprising a nonvolatile memory; wherein the mobile memory module is configured to be removably ([0039]) mounted to a controller board (106) in an ATS controller of the ATS.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Beard et al in view of Bosma et al (US Pub No. 2021/0257793 A1 and Bosma hereinafter)
Regarding Claim 6, Beard discloses (figs. 1-3B) the ATS controller of claim 5, bit fails to disclose wherein the protective outer housing has a generally planar handle or grip extending generally perpendicular from a top thereof. However, Bosma teaches (figs.7) wherein the protective outer housing has a generally planar handle or grip extending generally perpendicular from a top thereof. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine a generally planar handle or grip of Bosma to device of Beard in order to provide a tapered region to avoid accidental slip from the user’s finger ([0042]).
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ibrahim et al in view of So et al (US Pub No. 2020/0274272 A1 and So hereinafter)
Regarding Claim 17, Ibrahim discloses the mobile memory module of claim 16, but fails to disclose a plurality of plug-in leads extending from a bottom of the memory board; a protective outer housing enclosing the memory board therein; and a plurality of pegs protruding from a bottom of the protective outer housing, wherein the plurality of pegs are arranged to ensure mounting of the mobile memory module on the controller board. However, So teaches (fig. 1-4) a plurality of plug-in leads (307) extending from a bottom of the memory board; a protective outer housing (101) enclosing the memory board therein; and a plurality of pegs (376) protruding from a bottom of the protective outer housing, wherein the plurality of pegs are arranged to ensure mounting of the mobile memory module on the controller board . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the plurality of pegs of So to device of Beard in order to provide laterally-positioned mounting tabs to attach to corresponding mounting points on the controller (So and [0089]).
Regarding Claim 18, Ibrahim /So discloses the mobile memory module of claim 17. So further teaches wherein the protective outer housing has a sufficient height to prevent the plug-in leads from protruding therefrom (fig.1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the height of the housing of So to device of Ibrahim in order to provide housing to sufficient heat dissipation (So and [0043]).
Regarding Claim 19, Ibrahim /So discloses the mobile memory module of claim 17. So further teaches wherein the protective outer housing has a generally planar handle or grip (113) extending generally perpendicular from a top thereof. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the grip of So to device of Ibrahim in order to provide a curved surface to provide the housing and/or the storage device with a small or low-profile form factor (So and [0038]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROCKSHANA D CHOWDHURY whose telephone number is (571)272-1602. The examiner can normally be reached M-F: 8 AM - 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen L Parker can be reached at 303-297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROCKSHANA D CHOWDHURY/Primary Examiner, Art Unit 2841
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